The America Invents Act (AIA) is not all roses

In a NYSBA article by Charles Miller and Daniel Archibald on USPTO post-grant patent proceedings under the American Invents Act entitled “Agency Decision-Making, Judicial Recourse, and the Black Swan in PTO Post-Patent-Grant Proceedings Under the America Invents Act,” the authors suggest that the new legislation is “unworkable” and deprives patentees of due process. They argue that it deprives many patent owners from presenting for consideration evidence that was not available or could not be brought into the administrative record. It will also create a situation where the PTAB can raise new grounds for rejection or invalidity to which the patent owner has no opportunity to rebut before the judicial review process. The USPTO may also stall examination of applications during AIA implementation without providing applicants with patent term adjustments for the delay. Lastly, there is a concern over the change of venue from the District of Columbia District Court to the Eastern District of Virginia. The D.C. District Court has gained a great expertise and reputation for federal agency reviews. The unpredictability of the new court venue and movement of cases outside the D.C. hub of traditional expertise has an uncertain impact.